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PATENTS 

A HAND-BOOK OF INFORMATION 
FOR 

ATTORN EYS-AT-LAW 

Engaged in General Practice- 



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BrG. FOSTER 

Attorney-at-Law 

Patent and Trade-Mark Causes Exclusively 

Washington Loan & Trust Bldg. 

WASHINGTON, D. C. 

Copyright, igio, by B. G. Foster 
(Second Edition) 



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Author 
(Perton) 

9 M.. 1913 



INTRODUCTION. 

Every general practitioner of law is apt to be 
called upon, now and then, by a client for infor- 
mation and advice on patent law or the securing 
of a patent. Inasmuch as the practice thereof is 
a highly specialized branch of the profession, or- 
dinarily, he is not very familiar with the same, so 
that a concise, accurate compendium which will 
answer the questions ordinarily presented for 
consideration, will, it is thought be both conven- 
ient and useful. This is the aim of this booklet. 

It is of course not intended to be a guide to the 
actual handling of cases, for the subject is a big 
one and any attempt to detail the same would 
defeat the very result aimed at. Moreover, unless 
an attorney has had actual and thorough training 
and experience in the conduct of patent cases, he 
should, by all means, place such matters as are 
presented to him. in the hands of an associate 
vAio has thus specialized. 

I will be glad to give any further information 
at my command on the subject of patents, trade- 
marks, copyrights and the like, and will be glad 
to personally consider and report on any specific 
matter submitted to me. 

B. G. FOSTER, 
Washington, D. C. 



THE PATENT MONOPOLY. 

Letters Patent are granted in the United States 
for a term of seventeen years, and the owner 
thereof, whether the original inventor or a pur- 
chaser, has the exclusive right to the invention 
covered by the patent for that length of time. No 
one else, without his authority, can manufacture, 
or use, or sell the same. He may manufacture the 
invention himself, he may license others to do so, 
he may let it lie dormant, or he may assign the 
patent to other parties, so that they will become 
invested with all the rights he himself held. 

While a United States patent will not prevent 
the free production and use of the invention in 
other countries, the same cannot be imported into 
the United States without infringing the patent, 
and such importation can therefore be prohibited. 

WHAT CAN BE PATENTED. 

Section 4886 of the Revised Statutes states that 
*'Any person who has invented or discovered any 
new and useful art,, machine, manufacture or 
composition of matter, or any new and useful im- 
provement thereof, not known or used by others 
in this country, and not patented or described in 
any printed publication in this or any foreign 
country, before his invention or discovery thereof, 
and not in public use or on sale for more than 
two years prior to his application, unless the same 
is proved to have been abandoned, may upon pay- 
ment of the fees required by law, and other due 
proceedings had, obtain a patent therefor." 

It will therefore be evident that not only en- 
tirely new apparatus, machines, processes, articles 
and the like can be patented, but also improve- 
ments on those already in existence may be made 
the subject-matter of valid patents. 

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WHO SHOULD APPLY FOR PATENT. 

Only the actual inventor can make application 
for patent. It cannot be made by another for 
him, except in case of his death or insanity. 
Where two or more parties have together worked 
out the invention, and their ideas and mutual 
suggestions are so interwoven that it is impossible 
to separate them into independent inventions, a 
joint application for patent should be made, and 
if a patent be secured by one only of the inventors, 
such patent would be invalid. 

On the other hand, if a person secures an in- 
terest in the invention of another party, the real 
inventor only should make the application. An 
assignment by the inventor to the party in interest 
can be made and recorded in the Patent Office, and 
he will then appear as patentee. If in such case 
the two parties should file an application as joint 
inventors, the patent thereon would be invalid. 

THE FIRST STEP TOWARDS SECURING 
A PATENT. 

A small model, complete drawings or clear 
sketches of the invention should be prepared, 
together with a careful description, stating exactly 
what the device is for, how it is constructed, 
using reference letters upon the various parts and 
describing them by the reference letters. The 
features of importance, the improvements made 
and the advantages secured, should be carefully 
pointed out. This information should be sent to 
a com.petent patent attorney in order that he may 
make or have made, an examination of the Patent 
Office Records to ascertain, as far as possible, 
whether or not the invention is patentably novel. 
If the mechanism is complicated, and cannot be 
properly disclosed by models, drawings and writ- 
ten description, a personal conference with such 
an attorney is advisable. 



PRELIMINARY EXAMINATION OF THE 
PATENT OFFICE RECORDS. 



Such an examination is of real importance, for 
there are many meritorious inventions that have 
been patented and never placed upon the market, 
so that although one may be well acquainted with 
the commercial field, and know there is nothing in 
it to anticipate his invention, the Patent Office 
Records may disclose something very analogous. 

Nov/ there are two classes of attorneys, one 
of which charges a fee (ordinarily $5.00) for the 
preliminary examination, the other class making- 
no charge. There are undoubtedly conscientious 
men in both classes and yet it is believed to be 
v/iser to pay the fee. 

Those who make a charge for the service, look 
upon this feature of their business as an import- 
ant branch of it. They feel that they can, by reason 
of tlie fees secured, afford more expert and higher- 
priced assistance, their searches are apt to be 
rather more complete, and copies of the closest 
patents are purchased and forwarded to the 
client, so that he has before him., prior inventions 
and patents, and can reach an intelligent decision 
as to whether he wishes to proceed further. 

On the other hand, those who mxake free exam- 
inations ordinarily do not send copies of prior 
patents with their reports, and, unfortunately, 
some will advise a client that an invention is 
patentable, even though the principal features and 
basic ideas are anticipated, so long as there is 
some distinction, no matter how unimportant it is, 
on which a claim can be based. Knowing nothing 
of the prior art and believing his entire invention 
patentable, the inventor is thus blindly led into 
wasting money on something that will be absolute!}^ 
valueless to him. Therefore, it is believed advis- 
able to send to an attorney who makes a charge 
for the preliminary examination. 



SCOPE OF PRELIMINARY EXAMINA- 
TION. 

The preliminary examination cannot be abso- 
lutely complete. Over one million patents have 
been granted in the Unitv,d States, and mistakes 
in classification and oversights will, of course, 
occur. Moreover, patents that have been granted 
in foreign countries, and the various publications, 
trade magazines, etc., are ,not included in the 
examination, but many are searched by the Patent 
Office when considering an application. 

These searches do not take into consideration 
the question of infringement, but only that of 
novelty. A device may be patentable and a patent 
may be secured thereon and still that device may 
infringe an earlier patent. In other words, the 
Patent Office considers merely the question of 
patentable novelty. 

ATTORNEY'S REPORT AND PREPARA- 
TION OF APPLICATION. 

The attorney, having completed the examina- 
tion, reports the results thereof and expresses an 
opinion as to the patentability of the invention. 
If his report is favorable, he usually estimates 
the cost of the patent and calls for an amount to 
cover the cost of preparing the application papers 
and the official drawings. If, in view of this 
report, the inventor desires to proceed, he remits 
the amount called for and the necessary papers 
and drawings are prepared. 

As soon as these are completed, the papers are 
forwarded to the inventor for approval and execu- 
tion, and upon their return properly signed and 
accompanied by the attorney's fee, they are filed 
in the Patent Office. 

COST OF A PATENT. 

The cost of a patent depends greatly upon the 
character of the invention and the attorney hand- 

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ling it. For a simple device, such as a small article 
of manufacture that can be fully illustrated on 
one sheet of official drawings, the cost is some- 
times as low as $65. Itemized, it is as follows : 

First Government fee $15.00 

One sheet of official drawings 5.00 

Attorney's fee 25.00 

Final Government fee 20.00 

Total.... $65.00 

Where the invention is more complicated, re- 
quiring more sheets of drawings, each additional 
sheet costs $5, and the attorney's fee is increased. 

TO SAVE TIME. 

If the inventor makes a preliminary remittance 
of $25 instead of $5, with the original description 
of the invention, then, if a favorable report is 
sent, the preparation of the papers can be imme- 
diately undertaken Avithout the delay incident to 
awaiting a reply from the report. This is always, 
advisable and nothing is lost thereby, for if an 
unfavorable report is sent, the amount forwarded, 
less $5, the cost of the preliminary examination, 
will he returned. 

PROSECUTION OF THE APPLICATION. 

Having filed the application, it is placed in the 
particular division of the Patent Office handling 
the class of inventions to which it relates. Some 
of these divisions are months behind in their 
work, others are fairly up to date. Here the case 
remains until it is reached in the regular order of 
business, when it is taken up, carefully considered 
by the Examiner, and if any errors are found, or 
if it is discovered, after a careful search of the 
records, that the claims are drawn too broadly, or 
if the Examiner regards the application objection- 
able from any cause, the attorney is notified of 
the objection by letter. 



He has a year within which to reply to the 
official action. If the attorney considers the 
Examiner's action correct, he amends the case; 
if erroneous, he prepares a written argument or 
has a personal interview with him. These official 
actions and replies may occur several times until 
a final conclusion is reached and the application 
is allowed, or finally rejected, in which latter case, 
an appeal from the Examiner's decision, can be 
tak^n. 

The final Government fee of $20 must be paid 
before the patent actually issues, and the applicant 
is given six months after the allowance of the 
application within which to pay the same. If not 
paid, it can be renewed within two years at addi- 
tional expense. 

PATENT APPLICATIONS NOT OPEN TO 
INSPECTION. 

While all issued patents and their records are 
open to public investigation, no examination can 
be made of the applications that are pending in the 
Patent Office, as they are maintained in secrecy 
and are not accessible to any one except the appli- 
cant, his attorney, or an assignee, or upon their 
written authority. It is therefore impossible to 
ascertain if a person has filed an application for 
patent or if an application has been made along 
any particular line. 

TIME NECESSARY TO SECURE A 
PATENT. 

From what has been stated under ''Prosecution 
of the application/' it will be evident that it is 
impossible to tell the amount of time that will be 
required to secure a patent with proper protection. 
The various divisions of the Patent Office are 
continually varying, sometimes working up to 
date, at other times, dropping behind. Then it 
is impossible to foretell how many actions and 

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amendments will be necessary before adequate 
claims are secured. 

APPEALS. 

It sometimes happens that an Examiner refuses 
to allow claims of importance which an attorney 
believes to be patenable, and in such cases appeals 
can be prosecuted from the Examiner to a Board 
of Examiners-in-Chief, which reviews the matter 
and reverses or affirms the decision of the Exam- 
iner. If the decision of the Board of Examiners- 
in-Chief is unfavorable, the inventor can then 
appeal to the Commissioner of Patents in person 
and from his adverse decision, an appeal can be 
taken to the Court of Appeals of the District of 
Columbia. The Government fee in an appeal to 
the Board of Exam.iners-in-Chief is $10, and to 
the Commissioner of Patents, $20. 

The attorney's fee for prosecuting an application 
does not include his charges for prosecuting 
appeals. 

INTERFERENCES. 

Where two or more persons have made applica- 
tions for patent, and have laid claim therein to the 
same invention, the Patent Office institutes what is 
known as an interference proceeding, by means of 
which it determines which applicant is entitled to 
the interfering claims. An interference may occur 
between tv/o parties wholly unknown to each 
other, or, as is sometimes the case, one party may 
obtain a knowledge of an invention from another 
and fraudulently file an application. 

Often it is possible to dispose of these inter- 
ferences without great difficulty, and at compara- 
tively small cost. At other times, testimony must 
be taken and briefs prepared and filed, the same 
as in a suit in equit}^ It will be evident therefore, 
that interferences may be expensive, and that the 
fees for attending to matters in connection with 
them must be in addition to that charged for 
prosecuting the application. 

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PROSECUTING REJECTED APPLICA- 
TIONS. 

It often occurs that an inventor files his own 
application, only to meet with objections and 
rejections, which he is at a loss to answer. Or 
very often applications prepared by attorneys, 
unskilled in the practice, meet the same fate. Such 
cases can be placed in the hands of a patent attorney, 
who, for a small charge, usually $5, will investigate 
the matter fully, and report as to the prospects of 
securing a patent, at the same time stating what 
the cost will be for prosecuting the case. 

REISSUES. 

Sometimes a patent is found to be defective, 
perhaps in the description or in some other parts 
of the disclosure, but usually because the invention 
which it discloses, is not fully protected. Under 
certain conditions, the patent may be reissued to 
correct the defect. As the matter of reissue is 
one fraught with many questions, each particular 
case must stand on its own footing, and should be 
made the subject of a report by a skilled attorney. 

ASSIGNMENTS AND LICENSES. 

If it is desired to transfer a part or the whole 
interest in an invention before a patent is secured, 
or in a patent already issued, the same must be 
done by a written assignment which should be 
recorded in the Patent Office. If an assignment is 
made before patent, the person or company that 
obtains the interest in the same will appear in the 
patent as owner or part owner as the case may be. 
The cost of preparing and recording an ordinary 
assignment is usually $5. 

The owner of a patent may, if he desires, license 
other parties to manufacture, or use, or sell the 
invention owned by his patent, while retaining the 
title to the patent. These licenses are made by 
suitable instruments in writing. 

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ASSIGNMENT SEARCHES. 

For a fee dependent on the amount of work 
involved, an abstract of title of a patent can be 
furnished in order that the present ownership of 
such patent can be determined. 

DESIGN PATENTS. 

If an inventor has produced a novel, orna- 
mental structure, or has produced an ornamental 
design that is distinctty different from anything 
that precedes it, if the same rises to the dignity 
of invention, it may be protected by design patent. 
The complete cost of procuring a design patent is 
approximately as follows : 

Patent for .SH years $30.00 

Patent for 7 years 35.00 

Patent for 14 years 50.00 

The inventor must determine in advance the 
term, for after the patent has been obtained it 
cannot be changed or extended. 

TO PROSPECTIVE PURCHASERS OF 
PATENTS. 

Before purchasing an invention or patent, or an 
interest in the same, it is of the utmost importance 
that the prospective investor know exactly what 
he is buying and it is always advisable to consult 
an attorney before proceeding. Possibly the inven- 
tion infringes some prior patent ; possibly, in case 
of a patent, such patent is invalid or does not 
properly protect the invention. More than likely, 
it is not nearly as comprehensive in its scope as 
both the owner and intending purchaser believe it 
to be. It is much wiser to pay an attorney a fee 
for an expert and unbiased opinion before pur- 
chasing, rather than to buy blindly. 

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VALUE OF AN INVENTION. 

This is something that cannot be foretold. It 
depends on so many circumstances, whether it is 
of practical value, v/hether it is proper!}^ brought 
before the public or those who may be interested. 
Many inventions that would appear to be of the 
greatest commercial value are never heard of 
beyond the confines of the Patent Office. Others, 
that appeared to be trivial, have made fortunes 
for their owners. Like everything else, much 
depends on the ability and energy of the party or 
parties interested, and an attorney is ordinarily in 
no position to advise a client as to the commercial 
value of a patent. 

MARKING INVENTIONS. 

After an application for a patent has been made, 
the invention can be m.arketed and marked "PAT- 
ENT APPLIED FOR," but this affords no pro- 
tection, and any one else can still manufacture it 
until the patent is secured. Therefore it is some- 
what dangerous to exploit an invention until the 
patent is granted. When a patent has been obtained, 
the patented article should be marked "PAT- 
ENTED," together with the date of the patenr.. 

INFRINGEMENT. 

Any person who places a new machine or article 
on the market, is running the risk of infringing 
patents that cover the same. It is therefore often 
advisable to have an expert search made and an 
opinion rendered on the question of infringement 
before proceding v/ith the exploitation of new 
devices. 

If the owner of a patent considers that the same 
is being infringed, or if a person is threatened 
with a suit for infringement of a patent, he should 
seek the advice of a competent attorney. The cost 
of prosecuting an infringement suit or repre- 

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sentiiig a defendant in such a suit can hardly be 
approximated, but is very apt to be considerable. 

FOREIGN PATENTS. 

Patents granted in the United States do not, of 
course, extend in their protection to foreign coun- 
tries. Yet copies of the United States patents and 
the Official Gazette containing the same are sent 
abroad immediately on publication. Foreigners 
therefore are at perfect liberty to adopt and use, 
in their respective coimtries, inventions patented 
in the United States, unless patents are obtained 
in such foreign countries. Naturally the value of 
foreign patents depends on whether or not the 
invention is useful in such countries. Canada, 
Great Britain, Germany, France, and the other 
continental countries have many commercial en- 
terprises so similar to our own that often patents 
are valuable in these countries, as well as in the 
United States. 

While under certain conditions, valid patents 
can be obtained in many of the foreign countries 
after the United States patent is issued, it is 
usually the wiser plan to make application in the 
foreign countries in which patents are desired, 
before the United States patent is granted. 



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